The Methuselah Factor: When Characters Outlive Their

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University of Miami Entertainment & Sports Law Review

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The Methuselah Factor: When Characters OutliveTheir CopyrightsLeslie A. Kurtz

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THE METHUSELAH FACTOR: WHENCHARACTERS OUTLIVE THEIR

COPYRIGHTS

LESLIE A. KURTZ*

INTRODUCTION

Most fictional characters live briefly, then are forgotten alongwith the book, movie, or comic strip in which they appeared. Fewwill live to Methuselah's nine hundred years.1 Some, however, willoutlive the copyright in the works that embody them. Such charac-ters tend to have great value, and those who have owned them willwish to protect these creations from use by others. What, then, isthe legal status of fictional characters when the works embodyingthem enter the public domain?

Copyright lasts for a limited period,2 after which the copyrightowner loses all exclusive rights in a work, so that anyone may useit freely. The characters appearing in that work, however, can takeon lives of their own, enabling them to be thought of and usedoutside their original contexts.' They are agile creatures, capable ofmoving from one story to another, from one medium to another,from stories to merchandise and back again. They are not frozen inone form, but may change in appearance, personality, and relation-ships with other characters. Since they are capable of such inde-pendent existence, do they enter the public domain with the worksthat contained them?

Furthermore, fictional characters not only contain elements ofcreative expression, with qualities of development and individuali-

* Professor of Law, University of California, Davis; B.A. 1967, Brown University; M.A.

1970, New York University; J.D. 1974, Columbia University. The author wishes to thankProfessor Philip Page of the South Texas College of Law and Professor Thomas Goetzel ofGolden Gate University School of Law for their excellent work in organizing the Art LawSection of the 1994 AALS Convention and for inviting her to participate.

1. A few live longer. The characters from THE ILIAD and THE ODYSSEY have survivedfor thousands of years.

2. For works created on or after January 1, 1978, the duration of copyright ordinarilyendures for a term consisting of the life of the author plus fifty years. 17 U.S.C. § 302(a)(1993). For the complex provisions regarding copyright duration in a variety of situations,see 17 U.S.C. §§ 302-304 (1993).

3. It should be recognized, however, that some characters are not easily extricatedfrom a plot that contains elements of their life history, and the people, events, and sur-roundings that have formed them.

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Kurtz: The Methuselah Factor: When Characters Outlive Their Copyrights

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ENTERTAINMENT & SPORTS LAW REVIEW

zation protectible under copyright, but also can serve as a form ofidentification and command public acceptance in the marketplace.Thus, they have been protected under the law of trademarks andunfair competition, which seeks to prevent confusion as to thesource of goods and services. A key distinction between these doc-trines and copyright is the role of time. Unlike copyright, unfaircompetition and trademark protection is not limited in term andcan continue indefinitely." Given this durational difference, whathappens when copyright ends? May others make use of the charac-ters contained within works that are now in the public domain, orwill such uses be forbidden under these other doctrines?

This article will consider what happens when characters out-live their copyrights. It will look first at some basic principles un-derlying copyright and the law of trademarks and unfair competi-tion as they relate to characters. It will then consider the legalstatus of these characters when copyright protection ends. Whatprinciples govern their survival and what will they become? Whowill control their later lives?

COPYRIGHT: LIMITED DURATION AND THE PUBLIC DOMAIN

Copyright protection can extend to characters, apart from anyparticular works in which they appear, but the nature of this pro-tection has proved problematic. Courts have twisted themselvesinto knots trying to decide when a literary character has thosequalities that entitle it to copyright protection. The inquiry ordi-narily focuses on whether a character is sufficiently distinctive orwell-developed to command protection, and whether such distinc-tive development has been copied.5 Courts have found less diffi-culty in protecting characters with a visual component, such as

4. Protection under the law of trademarks and unfair competition lasts as long as theuse of a mark or other identifying feature is likely to create public confusion. See notes 32-39 infra and accompanying text.

5. 1 MELVILLE B. NIMMER & DAVID NIMMER, NIMMER ON COPYRIGHT, § 2.12 (1993)[hereinafter NIMMER & NIMmER]. The source of this inquiry is an oft-quoted statement byJudge Learned Hand in Nichols v. Universal Pictures Corp., 45 F.2d 119, 121 (2d Cir. 1930)(Characters may be protected independent of the plot, but "the less developed the charac-ters, the less they can be copyrighted; that is the penalty an author must bear for markingthem too indistinctly."). A second, and much criticized, articulation of what is necessarybefore a literary character can be protected is found in the "Sam Spade" case, Warner Bros.Pictures v. Columbia Broadcasting Sys., 216 F.2d 945, 950 (9th Cir. 1954), cert. denied, 348U.S. 971 (1955) (finding a character is protected if it "constitutes the story being told," butnot if it is "only the chessman in the game of telling the story."). For a detailed discussionof these approaches, see Leslie A. Kurtz, The Independent Legal Lives of Fictional Charac-ters, 86 Wis. L. REV. 429, 451-67 (1986).

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cartoons, than in protecting literary characters, which exist asmore abstract mental images.6 Visual characters are readily foundprotectible, and the focus quickly shifts to a comparison of theplaintiffs' and defendants' characters to see if the similarity be-tween them is sufficient for infringement.

The primary purpose of copyright is to promote creativity andthe dissemination of creative works, so that the public may benefitfrom the labor of authors.7 As Anthony Trollope put it, "[takeaway from English authors their copyrights, and you would verysoon take away from England her authors."' United States copy-right law provides authors with incentives by giving them the ex-clusive right to profit from and control certain specified uses oftheir works.9 This right, however, is not without costs. An incentivefor one author provides a barrier to others. The exclusive rightsgranted by copyrights diminish the ability of new authors to makeuse of what has come before in creating their own works. 10

Every artist builds on the creativity of the past, reshapingwhat already exists in the world. The mind cannot feed on itself,but must use what has been supplied to it from outside.1""Worldmaking as we know it always starts from worlds already onhand; the making is a remaking."1 2 Human fabrications form apart of these worlds. We live and work within our culture, and thelanguage and symbols that inhabit it. Moreover, freedom to imitatemakes the creation of new works less costly and increases theiravailability to those who might otherwise be unable to afford them.To insist on absolute protection for copyright owners would stiflecompetition and raise the price of access to the consumer. Copy-right strikes a balance between providing incentives to create and

6. See Warner Bros. v. American Broadcasting Cos., 720 F.2d 231, 240 (2d Cir. 1983).It should be recognized, however, that the distinction between literary and visual charactersis not always sharp. For example, Superman began as a cartoon but also appears, depictedby actors, in audiovisual works. Literary characters may take on some potentially pro-tectible visual attributes when portrayed on stage or in a film.

7. See ROBERT A. GORMAN & JANE C. GINSBURG, COPYRIGHT FOR THE NINETIES 13-16(4th Ed. 1993) (quoting REPORT OF THE REGISTER OF COPYRIGHTS ON THE GENERAL REVISION

OF THE U.S. COPYRIGHT LAW 3-6 (1961)).8. 1 ANTHONY TROLLOPE, AN AUTOBIOGRAPHY 142 (1883).9. These include, with limitations, the rights of reproduction, distribution, perform-

ance, display, and the preparation of derivative works. 17 U.S.C. § 106 (1993).10. See Campbell v. Acuff-Rose Music, Inc., 114 S. Ct. 1164, 1169 (1994) (There is an

"inherent tension in the need simultaneously to protect copyright material and to allowothers to build upon it.").

11. ALEXANDER LINDEY, PLAGIARISM AND ORIGINALITY 248 (1952).12. NELSON GOODMAN, WAYS OF WORLDMAKING 6 (1978).

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protecting the public domain13 from being stripped of the rawmaterials needed for new creations.

The limited duration of copyright reflects that balance and isan essential part of the basic copyright bargain. Authors are en-couraged to create, but with the ultimate aim of making literature,music, and the other arts broadly available to the public."' Thecopyright owner receives exclusive rights for a period of time inreturn for creating the work in the first place and enriching thepublic domain once the copyright term expires. We must be carefulin using other legal doctrines in a way that undercuts that balance,clogging the channels of creativity and commerce and curtailingthe ability of new authors to pursue their own works. As JudgeKozinski has said, "[o]verprotection stifles the very creative forcesit's supposed to nurture."' 5

Fictional characters, like real people, are part of the world inwhich we live. Characters such as Sherlock Holmes, Bart Simpson,Superman, Tarzan, James Bond, and Mickey Mouse may be betterknown and more valuable than any particular work in which theyappear. A character may be very real to an author. On his death-bed, "Balzac murmured, 'Bianchon would have saved me' - refer-ring to the great physician of Paris he himself had created." 6 Thesame may be true of an author's audience. Arthur Conan Doylereported overhearing a group of French schoolboys who, whenasked what they wanted to see first in London, unanimously askedto see Sherlock Holmes' lodgings on Baker Street.17 So many bookshave been written about Holmes, he has been awarded his own Li-brary of Congress number. 8 Biographies and stories have beenwritten about Sherlock Holmes,' 9 Dr. Watson,20 Sherlock's brother

13. For a discussion of the importance of the public domain, see generally JessicaLitman, The Public Domain, 39 EMORY L.J. 965 (1990); David Lange, Recognizing the Pub-lic Domain, 44 LAW & CONtEMP. PROBS. 147 (1981).

14. See Twentieth Century Music v. Aiken, 422 U.S. 151, 156 (1975).15. White v. Samsung Elecs. America, Inc., 989 F.2d 1512, 1513 (9th Cir. 1993) (Kozin-

ski, J., dissenting from the order rejecting the suggestion for rehearing en banc.).16. Vincent Starrett, The Baker Street Irregulars, in THE BAKER STREET READER 183,

183-84 (Philip A. Shreffler ed. 1984).17. Arthur Conan Doyle, Sidelights on Sherlock Holmes, in THE BAKER STREET

READER, supra note 16, at 14.18. L.C.N. PR 4624, Holmes, Sherlock (Fictitious Character).19. See, e.g. WILLIAM S. BARING-GoULD, SHERLOCK HOLMES AT BAKER STREET: A LIFE

OF THE WORLD'S FIRST CONSULTING DETECTIVE (1962); VINCENT STARRETT, THE PRIVATE LIFEOF SHERLOCK HOLMES (1933).

20. S.C. Roberts, Doctor Watson: Prolegomena to the Study of a Biographical Prob-lem, in THE BAKER STREET READER, supra note 16, at 55.

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Mycroft,2" the villainous Professor Moriarty,22 and the woman,Irene Adler. 28 MTV's Butt-head even has his own E-mail address.2"

Shakespeare's characters have appeared in new guises. In Ro-sencrantz and Guildenstern are Dead,26 Tom Stoppard used twoof the minor characters from Shakespeare's Hamlet to explore thenature of tragedy in today's world. Paula Vogel wrote Desdemona,a Play about a Handkerchief, looking at Shakespeare's Othellothrough the eyes of its female characters.26 Other classic charactershave also found new uses. For example, Jean Rhys wrote a novelabout the early life of the first Mrs. Rochester, the mysterious pris-oner and setter of fires in Jane Eyre, illuminating her characterand that of Rochester.2 7 The novel Mary Reilly retells the story ofStevenson's Dr. Jeckyl and Mr. Hyde through the eyes of the doc-tor's maid.28 Alice in Wonderland has been sent on an adventurethrough the alphabet.2 Pictorial characters have also found inter-esting uses. In The Man from Krypton, the author used Supermanto expound on religion.80 Stephen Gould, in The Panda's Thumb,used Mickey Mouse as the basis for a discussion of biology andhuman evolution.31

Fictional characters help form the modern myths out of whichwe operate and are an important part of the cultural heritage onwhich an author can draw to create something new. They can en-capsulate an idea, evoke an emotion, or conjure up an image. Whena fictional character has entered the public domain, there arestrong policy reasons for keeping it there, thus allowing others tomake use of it.

TRADEMARK AND UNFAIR COMPETITION

The law of trademarks and unfair competition has also been amajor source of protection for fictional characters. While copyright

21. R.C. Mitchell, Portrait of Mycroft, in THE BAKER STREET READER, supra note 16,at 73.

22. Edgar W. Smith, The Napoleon of Crime: Prolegomena to a Memoir of ProfessorJames Moriarty Sc.D., in THE BAKER STREET READER, supra note 16, at 79.

23. CAROL NELSON DOUGLAS, GOOD NIGHT, MR. HOLMES (1990).

24. [email protected]. ToM STOPPARD, ROSENCRANTZ AND GUILDENSTERN ARE DEAD (1967).26. PAULA VOGEL, DESDEMONA, A PLAY ABOUT A HANDKERCHIEF (1993).27. JEAN RHYs, WILD SARGASSO SEA (1966).28. VALERIE MARTIN, MARY REILLY (1990).29. GILBERT ADAIR, ALICE THROUGH THE NEEDLE'S EYE (1985).30. JOHN WESLEY WHITE, THE MAN FROM KRYPTON (1978).31. Stephen J. Gould, A Biographical Homage to Mickey Mouse, in THE PANDA'S

THUMB 95 (1980).

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is designed to protect the creative expression existing within acharacter, 2 the law of trademarks and unfair competition has adifferent purpose. It is concerned with a character's capacity tosymbolize a particular source of goods or services. For example, ifthe name or image of Mickey Mouse is used in a new cartoon or ona lunchbox, the public may identify it with Disney and believe thatDisney is its source. Bart Simpson on a t-shirt will likely be identi-fied with Twentieth Century Fox and Matt Groening. 3 Protectedelements of fictional characters have included their names, appear-ances, costumes and distinctive key phrases associated with thecharacter (for example, "E.T. Phone Home"'8 and "Hi, yo, Silver,away.").35

Whether protection is sought under state laws of unfair com-petition 6 or under the federal trademark statute, the LanhamAct," the critical legal issue is whether another's use of the charac-ter or its elements is likely to cause public confusion. This includesthe classic situation where one seller passes off her goods as those

32. Sometimes courts extend copyright protection to character elements that shouldonly be protected, if at all, under the law of trademarks and unfair competition. One court,for example, found infringement although nothing appeared to be taken from the plaintiff'scharacter but the name "Hopalong Cassidy" and the general western setting. Filmvideo Re-leasing Corp. v. Hastings, 509 F. Supp. 60 (S.D.N.Y. 1981), aff'd on other grounds, 668 F.2d91 (2d Cir. 1981). Another found the phrases "E.T. Phone Home" and "I Love You E.T." tobe protected under copyright. Universal City Studios v. Kamar Indus., 1982 Copyright L.Dec. (CCH) 25,452 (S.D. Tex. 1982).

33. Consumers need not be aware of the name of the source. It is sufficient if theyassume that products bearing the mark come from a single though anonymous source. 1 J.THOMAS McCARTHY, TRADEMARKS AND UNFAIR COMPETITION, § 3.03[3] (3d ed. 1994).

34. Id.35. Lone Ranger, Inc. v. Cox, 124 F.2d 650, 652 (4th Cir. 1942); Lone Ranger v. Cur-

rey, 79 F. Supp. 190 (M.D. Pa. 1948).36. The law of trademark has developed as part of the broader law of unfair competi-

tion. 1 McCARTHY, supra note 33, § 2.02.37. 15 U.S.C. §§ 1051-1127 (1994). Section 43(a) of the Lanham Act, 15 U.S.C.

§ 1125(a), condemns false descriptions and designations of origin:Any person who, on or in connection with any goods or services, or any containerfor goods, uses in commerce any word, term, name, symbol, or device, or anycombination thereof, or any false designation of origin, false or misleadingdescription of fact, or false or misleading representations of fact, which - (A) islikely to cause confusion, or to cause mistake, or to deceive as to the affiliation,connection, or association of such person with another person, or as to the origin,sponsorship, or approval of his or her goods, services, or commercial activities byanother person,. . . shall be liable in a civil action by a person who believes thathe or she is or is likely to be damaged by such act.

Section 32 of the Lanham Act, 15 U.S.C. § 1114, protects registered marks. Althoughthe abstraction that is a character cannot be a trademark, names and pictorial representa-tions of characters may be registered as trademarks or service marks under §§ 1052 and1053, if they are adopted and used to identify goods and services and distinguish them fromthose of another. Lanham Act § 45, 15 U.S.C. § 1127.

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of another. If Smith puts out a new Donald Duck cartoon on video-tape, people are likely to buy it in the mistaken belief that it wascreated by Disney. Public confusion, however, also includes confu-sion as to approval, authorization, or sponsorship. Many peopleseeing a new Sherlock Holmes story will know that Arthur ConanDoyle is dead and will not believe it was written by him, but theymay well believe it was sponsored or authorized by the Doyle es-tate. It is also important that the character be distinctive.38 Thepublic must associate the character or its elements with a singlesource.39 Because little known characters are not associated in peo-ple's minds with any particular source, protection is ordinarily lim-ited to characters that have undergone some reasonable degree ofcirculation.

Although characters can be protected under the law of trade-marks and unfair competition, they do not fit neatly within thesedoctrines, which often must be stretched to accommodate them.The line between a character and its label tends to be blurred. Fre-quently, a character is its own label. It identifies a source of anentertainment product and is the product itself. Furthermore, acharacter's ability to identify a single source may be no more thana convenient fiction. What is the source of a fictional character? Isit the author or publisher of a book; the director or producer of afilm? What if a character appears in a book and a film? Is thesource the book's author, the book's publisher, the film's director,or the film's producer? Characters have been found to be associ-ated in the public mind with their authors, 0 their producers, "1

their sponsors,'42 the works in which they appear,'4 and even with

38. Ordinarily, courts have required secondary meaning, a mental association betweena product and a single source of that product. Those few courts that do not require second-ary meaning look to unique associations, distinguishing characteristics that enable consumerto distinguish the plaintiff's product from others. See Kurtz, supra note 5 at 475-476, n. 257.

39. Of course, different cartoon ducks may have different sources. Consider DonaldDuck and Daffy Duck. Aside from the tandem piano scene in WHO FRAMED ROGER R ABrr?,these two characters have never come within quacking distance of each other, and each isattributable to a different source-Disney for Donald and Warner Brothers for Daffy.

40. Gruelle v. Molly-Es Outfitters, 94 F.2d 172, 176 (3d Cir. 1937), cert. denied, 304U.S. 561 (1938); Patten v. Superior Talking Pictures, 8 F. Supp. 196, 197 (S.D.N.Y. 1934).

41. Processed Plastic Co. v. Warner Communications, Inc., 675 F.2d 852, 856 (7th Cir.1982); Lone Ranger Inc. v. Cox, 124 F.2d 650, 652 (4th Cir. 1942); Universal City Studios v.J.A.R. Sales, 1982 Copyright L. Dec. (CCH) 25,460, at 17,742 (C.D. Cal. 1982); UniversalCity Studios v. Kamar Indus., 1982 Copyright L. Dec. (CCH) 25,452, at 17,683 (S.D. Tex.1982); Wyatt Earp Enters. v. Sackman, Inc., 157 F. Supp. 621, 625 (S.D.N.Y. 1958).

42. Premier Pabst Corp. v. Elm City Brewing Co., 9 F. Supp. 754, 761 (D. Conn. 1935).43. Processed Plastic, 675 F.2d at 856; Lone Ranger, 124 F.2d at 652; J.A.R. Sales,

1982 Copyright L. Dec. (CCH) 25,460, at 17,742; Wyatt Earp Enters., 157 F. Supp. at 625.

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themselves." Courts are not very rigorous in applying trademarkstandards in character cases. There is a tendency to focus on thecharacter itself, rather than on any information it provides aboutsource or identification. When an easily identifiable character, orits elements, appears in unauthorized form, courts readily find in-fringement, with little inquiry, and assume the existence of likelyconfusion whenever a defendant exploits a market demand createdby the plaintiff.45 The concern is more with unjust enrichmentthan with unfair competition as ordinarily defined.

When a well-known character is used in a new story, such as abook, movie, or cartoon, the public may well be deceived into be-lieving that they are getting the "real," or at least the "author-ized," version of the character. Forbidding this sort of use may en-dow the character with consistent qualities,4 6 at least in the senseof consistent storyline and character traits. It must be recognized,however, that the law of trademarks and unfair competition is be-ing used to protect the expressive elements of a character as wellas its ability to denote its source. The trademark owner gains ex-clusive rights not only to the features identifying the product, butto the product itself. Practically, this is not a major problem dur-ing the copyright period, when expressive as well as identifying ele-ments are entitled to protection. But, it can become an importantproblem when copyright protection expires, if the owners of trade-mark and unfair competition rights seek to use them as an alterna-tive means to protect a character as literary property.

When a character or its elements appears on merchandise,however, such as a mug, lunchbox, belt buckle and the like, theproblem is different. One major function of trademarks is to signifythat the goods bearing the mark are of consistent quality.41 Thequality may be high or low, but the mark provides a kind of a war-ranty that the goods bearing the mark will be of the same charac-ter. This consistency reduces consumer search costs-past experi-ence becomes a good predictor of likely outcome-and encourages

44. DC Comics v. Unlimited Monkey Business, 598 F. Supp. 110, 115 (N.D. Ga. 1984)(finding Superman and Wonder Woman have acquired outstanding celebrity as unique dis-tinctive marks "symbolizing the extensive goodwill associated with the public image of thishero and heroine.").

45. Kurtz, supra note 5, at 495-506. See David B. Feldman, Finding a Home for Fic-tional Characters: A Proposal for Change in Copyright Protection, 78 CAL L. REv. 687, 705-708 (1990): Michael Todd Helfand, Note, When Mickey Mouse Is as Strong as Superman:The Convergence of Intellectual Property Laws to Protect Fictional Literary and PictorialCharacters, 44 STAN. L. Rv. 623, 643-653 (1992).

46. See notes 47-49 infra and accompanying text.47. See 1 McCARTHY, supra note 33.

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expenditures on quality.48 This warranty of consistent qualityoften does not really exist when fictional character marks appearon merchandise. A fictional character possesses what Umbreit calls"sentimental value," based on the fact that the article bears thesymbol and people like the symbol. 9 Consumers buy Teenage Mu-tant Ninja Turtles clothing or "E.T. Phone Home" mugs not be-cause the symbol indicates that the shirt is of a certain quality orthe mug won't break, but because they want that picture or thatphrase on their merchandise.

It might be possible to protect product differentiation withoutgranting exclusive merchandising rights under the law of trade-marks and unfair competition. 0 Merchants, authorized and unau-thorized, could be permitted to sell shirts, mugs and the like, bear-ing character names and indicia (so long as these indicia areunprotected by copyright), with the source of each clearly marked.Only the original creators of the characters, or their licensees,would be permitted to call their goods authorized or official. Exclu-sive marketing rights are valuable to their owners, but they arealso costly. 1 Not every use of a character interferes sufficientlywith economic expectations and incentives to justify a legalremedy.

In the present state of affairs, however, such a system is likelyto cause consumer confusion as to the authorization or sponsorshipof unauthorized goods. Several courts have noted that the publichas come to expect the exploitation and licensing of well-knowncharacters.2 In a 1983 survey, 91% of the people questionedagreed with the proposition that "no product can bear the name ofa an entertainer, cartoon character or some other famous personunless permission is given."53 This is borne out in informal pollsthat I have taken in my class. My students, who have grown up ina world where licensing is endemic, are overwhelmingly convincedthat you cannot put the indicia of popular characters on merchan-

48. William M. Landes & Richard A. Posner, Trademark Law: An Economic Perspec-tive, 30 J.L. & ECON. 265, 269 (1987).

49. Kenneth B. Umbreit, A Consideration of Copyright, 87 U. PA. L. REV. 932, 940(1939).

50. This is not the position courts are taking today; they vigorously protect the cre-ators of characters and their licensees against the use of these characters by others.

51. See BiRite Enters. v. Button Maker, 555 F. Supp. 1188, 1194-95 (S.D.N.Y. 1983).52. Conan Properties v. Conans Pizza, 752 F.2d 145 (5th Cir. 1985); Warner Bros. v.

Gay Toys, 658 F.2d 76, 79 (2d Cir. 1981); Universal City Studios v. J.A.R. Sales, 1982 Copy-right L. Dec. (CCH) 1 25,460, at 17,745 (C.D. Cal. 1982).

53. McCarthy, supra note 33, § 10.17. Out of 250 people surveyed, 91% agreed withthe statement and 80% agreed at the strongest possible level.

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dise without permission and, therefore, that goods bearing such in-dicia must be licensed. Indeed, they find it difficult to believe thatthere is a question.

This system of beliefs may not be inevitable, however, and theexistence of confusion may be something of a bootstrap result. Formany years, licensing has been increasing and courts have beengranting exclusivity to those with rights to characters in the en-tertainment field. Naturally, people believe that this sort of usemust be authorized. But what would happen if courts shiftedcourse and stopped providing these exclusive rights? If others werepermitted to offer unauthorized merchandise, so that a variety ofversions competed for public acceptance, the perception that allsuch products are sponsored would be undercut. Mark ownerswould be encouraged to advertise their version as the genuine, offi-cial, authorized one. Newcomers could be required to use labellingand distinguishing language to make it clear that their version isnot. Public perceptions could change.

In any event, if a character testifies only, in general terms, toits sponsorship or authorization, the policy underlying trademarkprotection, while present, is weaker than if it provides a guaranteeof the quality of the product on which it appears. This is an impor-tant factor when the trademark goal of avoiding public confusioncomes into conflict with the policy of allowing free use of what is inthe pubic domain.

WHEN COPYRIGHT PROTECTION ENDS

Once a work has entered the public domain, copyright nolonger forbids the copying of anything contained within it, includ-ing the characters." But a character may appear in a variety ofworks and media, and may change and evolve with the passage oftime. When the first work in which the character appeared goesinto the public domain, is the character available for use in newstories and contexts, despite the fact that other works containingthe same character still remain in copyright?

To the extent that these other works contain the same charac-ter, they are derivative of the first, and the copyright in a deriva-tive work protects only the incremental additions of originalityprovided by the creators of that work . 5 Thus, others may make

54. 1 NiMaiR & NIMMER, supra note 5, § 2.12.55. Silverman v. CBS Inc., 870 F.2d 40, 49 (2d Cir.), cert. denied, 492 U.S. 907 (1989).

See Burroughs v. Metro-Goldwyn Mayer, Inc., 683 F.2d 610, 631 (2d Cir. 1982) (Newman, J.,concurring); 1 NIMMER & NIMMER, supra note 5, § 2.12.

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use of the character as it appeared in the public domain original,but may be forbidden to use new traits, visual elements, bits of lifestory, or other character changes that were added in later copy-righted works. 6 It should not matter whether newcomers put thecharacter into new stories, new media, or both. Copyright no longerprotects that which lies within the public domain: the character asit originally appeared.

This issue was faced squarely in Silverman v. CBS,5 7 a case inwhich CBS claimed copyrights in the Amos 'n' Andy radio and tel-evision programs. Silverman wrote a script for a broadway musicalcomedy based on the characters Amos and Andy. Although thecopyright had expired on the radio scripts, the television programswere still under copyright. The district court 8 found that the char-acters that were in the public domain in a literary work (the radioscripts) were protectible under the copyright in the audio-visualpresentation. The visual representations of the characters in thetelevision program went beyond the word portraits in the publicdomain scripts and were therefore protected. The duplication ofthe characters as they appeared on television would infringe theCBS copyrights. The district court appeared to protect all ele-ments of the audio-visual characters, whether they were derivedfrom the public domain scripts or not.

The court of appeals found this approach unjustified, statingthat the CBS copyrights protected only additional expression be-yond that contained in the public domain radio scripts. 9 TheAmos 'n' Andy characters were sufficiently delineated in the publicdomain scripts to have been placed in the public domain alongwith the scripts.6 0 Silverman was entitled to use this public domainmaterial, but he was not entitled to use any further delineation ofthe characters contained in any script or program still protected bycopyright.

This doctrine may have interesting consequences for charac-ters that have evolved. When Mickey Mouse made his debut inSteamboat Willie in 1928, he was a "rambunctious, even a slightly

56. Id. See also Michael V.P. Marks, The Legal Rights of Fictional Characters, 25COPYRIGHT L. SYMp. (ASCAP) 35, 84-85 (1980); Feldman, supra note 45, at 699; Helfand,supra note 45, at 654.

57. See infra notes 58-60 and accompanying text.58. Silverman v. CBS Inc., 632 F. Supp. 1344 (S.D.N.Y. 1986), aff'd in part, vacated in

part, and remanded, 870 F.2d 40 (2d Cir.), cert. denied, 492 U.S. 907 (1989).59. 870 F.2d at 50.60. Apparently an insufficiently delineated character would not go into the public do-

main with the work. But then it would not be protected by copyright in the first place.

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sadistic fellow."61 Later, his behavior improved, as did his physicalappearance. He became more youthful, developing "a larger rela-tive head size, larger eyes, and an enlarged cranium.""2 DonaldDuck also changed; his enlarged beak receded and his eyes grewlarger.6 The Peanuts characters have undergone changes over theyears as well, with the heads becoming increasingly refined. 4 Su-perman has different powers today than in his earliest iteration. Atfirst, he displayed extraordinary leaping ability, which later be-came the power of flight."' As the earliest versions of these charac-ters enter the public domain, it will be interesting to consider thedissection of protected and unprotected elements.

Once it is clear that a character is no longer protected bycopyright, should it be possible to prevent newcomers from makinguse of the character under the law of trademarks and unfair com-petition? Copyright and trademark laws are separate and indepen-dent, with different underlying rationales and objectives.6 There-fore, the fact that a character is in the public domain for copyrightpurposes does not inevitably place it there for trademark purposes.A character, however, is more than an identifier of source. If othersare forbidden to use fictional characters in the public domain,trademark law would provide an alternate means to protect themas literary property, and would make them unavailable for expres-sive purposes, perhaps indefinitely.

There has been some willingness to allow a form of mark-based protection for characters, even after copyright has expired.In Frederick Warne & Co. v. Book Sales, Inc.,67 the original pub-lisher of the Peter Rabbit books written by Beatrix Potter claimedexclusive trademark rights to the cover illustrations on seven ofthose books, all of which were in the public domain. 8 The defend-ant, who used these drawings to illustrate its book of Peter Rabbit

61. Gould, supra note 31, at 95. For a discussion of the development of Mickey Mouse,see ROBERT W. BROCKWAY, MYTH FROM THE ICE AGE TO MICKEY MOUSE 127-136 (1993).

62. Gould, at 96. Gould suggests that national symbols are not altered capriciously,and cites Conrad Lorenz for the proposition that babyish features tend to elicit strong feel-ings of affection in adult humans. He submits that "Mickey Mouse's evolutionary road downthe course of his own growth in reverse reflects the unconscious discovery of this biologicalprinciple by Disney and his artists." Id. at 104.

63. Id.64. DAVIs ENTERPRISE WEEKEND, May 23, 1985, at 6, col. 1.65. Warner Bros. v. American Broadcasting Cos., 720 F.2d 231, 236 (2d Cir. 1983).66. See II PAUL GOLDSTEIN, COPYRIGHT: PRINCIPLES, LAW AND PRACTICE, § 15.14.1.3

(1989 and 1993 Supp.); MCCARTHY, supra note 33, § 10:16.67. 481 F. Supp. 1191 (S.D.N.Y. 1979).68. These illustrations were originally created by Potter for plaintiff's editions of the

books.

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stories, and as "corner ornaments" for many of the pages of eachstory," contended that it was entitled to summary judgment be-cause its illustrations were parts of copyrightable works now in thepublic domain.

The court disagreed, holding that a character that has ac-quired independent trademark significance, identifying the sourceor sponsorship of goods, should not be denied protection simplybecause it has fallen into the pubic domain under copyright.7 0 Theproper factual inquiry was not "whether the cover illustrationswere once copyrightable and ha[d] fallen into the public domain,"but whether they had acquired secondary meaning identifyingWarne, and whether there was a likelihood that the defendant'suse of them would cause public confusion.7 1 The court recognizedthat "trademark and unfair competition theories might serve toprotect a character beyond the term of the copyright applicable tothe underlying work," but found that the question "need not bereached since plaintiff does not seek to establish exclusive trade-mark rights in the characters themselves but only to protect itslimited right to use specific illustrations of those characters. '7 2

Judge Nies, in her special concurrence in In re DC ComicsInc./8 noted the potential problem involved in allowing the regis-tration of particular drawings of Superman, Batman, and the Jokeras trademarks for three dimensional toy versions of the same char-acters. Recognizing the possibility that the doll design might beperpetually protected, Judge Nies said that it was not necessary toconsider the issue during the copyright period; it could be ad-dressed, if necessary, once the copyright expired.74 She did state,however, that "if a copyrighted doll design is also a trademark foritself, there is a question whether the quid pro quo for the protec-tion granted under the copyright statute has been given, if, uponexpiration of the copyright, the design cannot be used at all byothers.

'75

Indeed, to the extent that trademark would protect expressiveelements-and that extent is substantial-forbidding the use of

69. The defendant also used the "sitting rabbit," a design which appeared in one ofthe original Peter Rabbit books, on the cover of its book. This design was the principalsymbol of the plaintiff's licensing enterprises, 481 F. Supp. at 1194. After Warne institutedits action, defendant changed to a rabbit design of its own creation. Id.

70. Id. at 1196.71. Id. at 1198.72. Id. at 1197, n.3.73. 689 F.2d 1042 (C.C.P.A. 1982).74. Id. at 1052.75. Id. at 1052-1053, n.6.

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characters from public domain works would protect that whichcopyright principles require should be granted to the public. Thiswould effectively extend copyright protection beyond the periodprovided for by the statute, undercutting the basic copyright bar-gain.76 There is a conflict between the policy underlying the lim-ited duration of copyright, and that which allows trademark pro-tection so long as a likelihood of public confusion endures. Somecommentators have suggested that once copyright expires, anyonecan copy the original work, but that the law of trademarks andunfair competition can be used to prevent new uses of the charac-ters in new stories.77 Another proposed solution is to allow the un-authorized creation of new works using the visual appearance andcharacterization of a character, but not its name.78

The right to copy, however, cannot be used effectively if anewcomer must change the names of the central characters. Theability to use the characters in an evocative fashion would be lost.Furthermore, the exclusive rights lost at the expiration of copy-right include the right to create derivative works, i.e., the right touse the characters in new stories. That is the nature of the publicdomain: anyone is entitled to use what lies within it. Indeed, al-lowing an author to create something new from that which alreadyexists lies at the heart of the policy limiting the duration of protec-tion for creative works.1 9

Trademark concerns can be addressed without undercuttingthe interest in preserving the public domain by limiting the rem-edy available to the owner of mark-based rights in a character.Newcomers can be required to tailor their marketing and labelling,to use distinguishing language to minimize confusion. 0 For exam-ple, a new Sherlock Holmes story could be prominently markedwith the name of its author and include the legend, "Not writtenby Arthur Conan Doyle or authorized by the Doyle estate." Ofcourse, this remedy will be less effective in protecting against pub-lic confusion and facilitating consistent character traits than for-

76. See supra notes 14-15 and accompanying text.77. Samuel W. Tannenbaum, Protection of Fictional Characters in the Entertain-

ment & Literary Fields, 4 BEY. HILLS BAR J. 11, 18 (1970); Franklin Waldheim, Charac-ters-May They Be Kidnapped, 12 BULL. COPYRIGHT Soc'¥ U.S.A. 210, 217 (1965).

78. E. Fulton Brylawski, Protection of Characters-Sam Spade Revisited, 22 BULL.COPYRIGHT SOC'¥ U.S.A. 77, 96 (1974).

79. See supra notes 11-15 and accompanying text. On the other hand, this sort of useis more likely to create public confusion than simple copying.

80. This is the approach that has been taken in cases involving the titles of publicdomain works. See Leslie A. Kurtz, Protection for Titles of Literary Works in the PublicDomain, 37 RUTGERS L. REV. 53 (1984).

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bidding the use of a character, and far less useful for those whoseek to retain exclusive rights. Allowing exclusive rights, however,not only diminishes the creative pool from which all authors mustdraw, but does so for an unlimited period of time.

The same approach should be used when characters or theirelements are used on merchandise. I have suggested that the inter-ests protected by trademark tend to be weak in such cases.81 Whenthe claim of mark-based rights is premised solely on the idea thatthe public will believe the products are authorized, and not on anywarranty of consistent quality, the remedy of distinguishing lan-guage provides some protection against public confusion, while al-lowing competition in marketing goods adorned with the indicia ofpublic domain characters."'

This solution is likely to be of cold comfort to those who holdrights in characters under the law of trademarks and unfair com-petition. Not only does it provide them with less protection than aprohibition against copying, but it is likely to lead to a diffusion ofsource. Once a number of people have made use of the character,even with distinguishing language, the perception of a single sourcemay be destroyed, and trademark rights may end altogether.83 Butthis result is better than the alternative. One person's right is an-other's restraint, and the cultural heritage from which all maydraw should not be indefinitely diminished.

Trademark concerns are the greatest with a character likeMickey Mouse, where the association with source is extraordinarilystrong, not a convenient fiction at all. These characters may ceaseto exist as we know them, if they are given to the public for un-restricted use.8 4 One commentator has suggested that with such

81. See supra notes 47-53 and accompanying text.82. In the rare situation where some element of a public domain character functions

solely as a mark-without depriving others of the ability to use characters in new stories orto ornament their merchandise-then the public domain status of the character is irrelevantand it would be appropriate to forbid the use of a confusingly similar mark.

83. Cf. Universal City Studios v. Nintendo, 578 F. Supp. 911 (S.D.N.Y. 1983), aff'd onother grounds, 746 F.2d 112 (2d Cir. 1984) (finding that the rights to the King Kong charac-ter and name had been so divided among different parties that the King Kong mark wasincapable of indicating to consumers a single source of origin).

84. Of course, characters may cease to exist as we know them, even if they are notgiven to the public for unrestricted use. Copyright lasts for a long time. See supra note 2.By the time it expires, those who are claiming rights are not the original creators, who areno longer alive, but are heirs, assigns, companies for which the work was created, and thelike. They do have a motive to protect the value of the character. They may be more likelyto keep the character as we know it. But, they may not. Views of the character and its usesmay differ. Once the original creator is gone, one voice is not necessarily better than a diver-sity of voices; one view need not be better than many.

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characters, whose association with source is " 'hard wired' in thepublic consciousness," distinguishing language may be insufficient,and, if so, use of the character in recognizable form should be en-joined. 6 But the best known characters, such as Mickey Mouseand Sherlock Holmes, become cultural artifacts and are of greatvalue in creating new works. It is the power of these characters toevoke, to encapsulate, that makes them so important to the publicdomain.

85. Helfand, supra note 45, at 671-672.

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Documents

The Methuselah Factor: When Characters Outlive Their